Prometheus Unbound: The Federal Circuit Responds to Bilski

Engage Volume 12, Issue 1, June 2011

Following the U.S. Supreme Court’s decision in Bilski, the U.S. Court of Appeals for the Federal Circuit wasted little time in responding with a second decision in Prometheus Laboratories, Inc., v. Mayo Collaborative Services. On remand from the Supreme Court, the threshold question for the Federal Circuit in Prometheus was whether the patents in suit claimed patentable subject matter in view of Bilski’s “clarification” of Section 101 jurisprudence. In simple terms, as on initial appeal, the Federal Circuit found that the Prometheus claims were patent eligible...